“Merely Descriptive” Trademarks

I am often asked by clients if they can register a trademark for what they think is a great domain name that they have been offered and which would undoubtedly drive search results to their website. Sometimes the client has already swallowed the hook and purchased the domain, perhaps for many thousands of dollars.

If it looks too good to be true, of course, it probably is. When an especially catchy domain name suddenly becomes available to you, while it is conceivable that it may be a great and rare opportunity, often the corresponding trademark has not been snapped up already because it would infringe on the rights of a prior trademark owner—sometimes a powerful one—and the seller, usually a domain broker, often in a foreign country, is banking on the buyer making an impulse purchase before considering that they may have paid a lot of money for an unusable piece of virtual property.

Other times, a domain name may be a combination of a couple of words that perfectly describe your business. I get emails all the time offering to sell me domains like “AtlantaLitigationAttorney.com” or “GeorgiaTrademarkAttorney.com.” Many of these domain names have been scooped up and packaged by domain brokers hoping to turn a quick profit.  Of course, while using a domain like this might help to drive web traffic to your business (since they do contain common search terms), it will do little to help you brand your business—who would want to be called “Internet Search Engine” when they could be called “Google,” “Bing,” or “Yahoo”? When developing a name for your business, product, or service, remember that the strongest brands are usually those that come to associate your products and services with a unique set of qualities, not just to describe or name those products. Consumers think of Bud Light, Nike, or Chanel, for example, as a complete identity, even a set of lifestyle choices, not just the name of a product or company.

So I can’t register a descriptive name as a trademark?

Well, sometimes you can. But unless you have already been using and have become widely and exclusively known by a descriptive mark for at least five years, even if there were nothing preventing you from registering such a name, you still won’t be able to claim exclusive rights nationwide to a “merely descriptive” name simply through local use and federal trademark registration. “California Juice Co,” and “Saratoga Juice Bar,” for example, have both registered successfully on the Supplemental Register, a secondary trademark list for “merely descriptive” marks and which provides some, though not all, of the protections of the Principal Register.

While the Supplemental Register is sometimes seen as a stepping stone to later registration on the Principal Register, there are drawbacks to putting all of your marketing eggs into a basket you don’t yet fully own.  For example, it can be difficult to prove infringement of a mark registered on the Supplemental Register. Why? Because infringement occurs when there is a likelihood that consumers will be confused as to the source of goods or services uniquely identified under a particular mark, and registration on the Supplemental Register is by its very nature an admission that the mark is not strong enough to uniquely identify (and it therefore merely describes) the products or services in question or their source… and “mere description” is not something you can protect.

Of course, there are plenty of well-known marks that began life on the Supplemental Register and then moved on: “Five Hour Energy Drink” and “Chapstick,” for example. Such marks may be re-registered in the Principal Register in five years if they have come to identify the product or service exclusively in the marketplace and have thus achieved what trademark law calls “secondary meaning”; i.e., a unique brand identification in addition to the self-evident, descriptive meaning.

How can I create a unique trademark and describe my product at the same time?

Many companies bridge the gap between completely unique marks (which take a lot of energy and marketing expenditure to associate the mark with the product or service) and “merely descriptive” marks by opting for something of a hybrid. “Tiger Energy Drink,” “Longhorn Consulting Co.,” “Falcon Performance Products,” and “Frozen Pints Craft Beer Ice Cream” are all registered marks which are highly descriptive but have arbitrary and therefore “unique” elements grafted onto the descriptive portion of the mark to create a mark that is much more easily registrable and yet still describes the product.

Working with an experienced trademark attorney at Briskin, Cross & Sanford can help you to identify the likelihood that your proposed brand can be successfully registered as a trademark and, since the Trademark Office may take a year or more ultimately to reject an application for a mark that is not registrable, can save you a great deal of time and money as you seek to launch a successful company, product, or marketing campaign.

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The End of the “Pomegranate Blueberry Flavored Blend of 5 Juices”

Imagine this…

You are sitting poolside, enjoying a bottle of Minute Maid’s “Pomegranate Blueberry Flavored Blend of 5 Juices” when you happen to look at the ingredients.

It slowly dawns on you the the self-described “Pomegranate Blueberry Flavored Blend of 5 Juices” only in fact contains about 0.3% pomegranate juice and 0.2% blueberry juice.

You are outraged!

How can Minute Maid and its owner, Coca-Cola, get away with such misleading labels?

The good news is that they no longer can, thanks to POM Wonderful, LLC and a unanimous U.S. Supreme Court.

It begins (as it always does) with a lawsuit. POM Wonderful sued Coca-Cola, alleging that Coke’s label for its “Pomegranate Blueberry” juice deceives buyers into believing that the juice primarily contains both pomegranate and blueberry, thus violating Section 43(a) of the Lanham Act (which addresses situations where one company’s false advertising is causing harm to another competing business).

Coke’s response to the lawsuit was simple: its “Pomegranate Blueberry Flavored Blend of 5 Juices” label complied with the Food, Drug and Cosmetic Act (the “FDCA”) regulations, which trump the Lanham Act. Thus, Coke argued, if its label complies with the FDCA, it cannot be liable under the Lanham Act.

In a rare, and, dare we say, juicy unanimous decision, the U.S. Supreme Court sided with POM Wonderful (interestingly, it has been reported that Justice Kennedy stated during oral arguments that he was also misled by Minute Maid’s “Pomegranate Blueberry” label).

Now, a company harmed by a competitor’s false or misleading marketing of a food or beverage product can file a lawsuit under the Lanham Act, even if the marketing labels are regulated by the Food and Drug Administration and comply with the Food, Drug and Cosmetic Act.

The U.S. Supreme Court’s recent decision will have companies in the food and beverage industry scrambling to review, and possibly revise, their labels and marketing materials. Of course, this decision has farther reaching implications than just for Minute Maid and its competitors since the Supreme Court’s decision could conceivably apply to other businesses regulated by federal laws… like alcoholic beverages, transportation, even pharmaceuticals.

If you are concerned that your product label does not properly describe your product, or perhaps a competitor’s label falsely describes your competitor’s product and puts you and other honest businesses at a disadvantage, consult a trademark attorney at Briskin Cross and Sanford… before, not after, someone squeezes your juciebox for you.

Pinterest wins $7.2M in legal battle with cybersquatter

Chinese cybersquatter Qian Jin, in one of the most brazen cybersquatting cases to come to court in months if not years, has been ordered by the US District Court for the Northern District of California to pay Pinterest $7.2 million in damages and legal fees and turn over to Pinterest the domains (e.g. pintesrest.com, pinterests.com, etc.) he had set up to divert inadvertent searchers to his own slew of money-making websites.  Hat tip to Dara Kerr of CNET: Pinterest wins $7.2M in legal battle with cybersquatter | Internet & Media – CNET News.

Alleging Cyberpiracy, Trademark Infringement, Dilution, and a series of California state law claims, the complaint charges that Pinterest was not Jin’s only target: the serial cybersquatter registered “domains that appear to infringe upon the marks of popular companies, especially online companies, across the globe, including Google, Facebook, Twitter, Etsy, Eventbrite, Foursquare, Hotmail, Hulu, Lotus, Spotify, Blekko, Dwolla, Volunia, Skillshare, Jumio, Scribd, Zazzle, and Zynga.” (read the full complaint here).

Not only did Qian Jin register domains that were clearly intended to cause confusion with and dilute a wide variety of famous brands, he even tried to register Twitter, Foursquare, Instagram, Quora, and Pinterest  as trademarks in China… did he think that this would stop other Chinese cyberpirates from moving in on his territory?

Action in the case was suspended for some time while Pinterest achieved service on Jin in China, which it eventually managed to do in January, 2013. Qian Jin (perhaps not surprisingly) failed to file an answer in the case, and the Court finally awarded a default judgment to Pinterest, pulling the plug on Jin’s operation for good.

While the Court’s order may help Pinterest gain control of the infringing domains, Pinterest’s chances of collecting a single Yuan of the $7.2 million judgment from Qian Jin are probably as remote as, well, China.  For our purposes, however, the judgment is not just a shot across the bows of would-be domain squatters, cyberpirates, and trademark infringers across the globe but a salutary warning to small-time hucksters and wannabe cyberpirates trying to shake down local businesses in exactly the same way.

Louboutin’s Immortal Sole Used to Attack Islam – Counterfeit Chic

Susan Scafidi, law professor and academic director of Fordham Law School’s Fashion law Institute (bio here) discusses Christian Louboutin’s efforts to seek an injunction from a court in Belgium preventing the use of his trademark red-soled pumps by a right-wing political faction in Belgium as a part of its anti-Muslim rhetoric.

Louboutin claims his brand is being tarnished.  Scafidi agrees: “This is a case of unauthorized use of a trademark in unrelated advertising, albeit for a political party and a point of view rather than a product.”  She also points out that Louboutin is not the only aggrieved party: the Belgian photograph shamelessly rips off the art of  Canadian feminist photographer Rosea Lake (original shown here), a fact about which Ms. Lake is none too pleased (see her own blogged response here).

Susan Scafidi’s full post (linked below) is well worth reading (as are all of her blog postings).

Louboutin’s Immortal Sole Used to Attack Islam – Counterfeit Chic.

Protecting your big idea

“If only I had thought of [enter big idea here], I’d be rich!

We’ve heard a similar phrase spoken countless times, and we tend to believe that big ideas are a sure path to success, but big ideas are a funny thing.  The person who has a big idea doesn’t always end up with the big idea, doesn’t always wind up coming in first, and doesn’t always end up cashing out big.

In many ways, the success of the big idea comes down to the intellectual property behind it and who can claim a valid legal interest in that property.  As an entrepreneur or business owner, it is almost certain that you will enter agreements with several other parties in order to bring your idea to market.  As you do so, you will have to consider your assets and the measures you need to take to protect them.  It can be easy to overlook the formalities, especially when relationships seem trusting and forward-moving.  Some may fear that tending to the details will kill the deal, impede the trust-building between the parties, dampen the punch of the sales pitch, or perhaps seem unnecessary because everyone is on the same page.  But is everyone on the same page?  Better yet, even if everyone is on the same page now, can you guarantee they will stay that way?

In American Express Co. v. Goetz, the plaintiff, Stephen Goetz, claimed that he had a big idea, that it belonged to him, and that it was stolen by American Express.  His big idea was the slogan “My Life My Card” to be used in conjunction with personalized credit cards. Goetz was a marketing professional, so he put together a packet pitching the idea and mailed it to American Express, Mastercard, Citigroup, and others.  He registered the domain name http://www.mylife-mycard.com, applied for a federal trademark, and also disseminated to recipients of his pitch the address of a test website that previewed the software he had developed to help credit card users personalize their experience.  On all marketing material, the slogan “My Life My Card” was prominently displayed.

As it turns out, his idea was a good idea, a very good idea.  It so embodied a specific marketing message that American Express chose to use the same exact slogan.  As you may recall, beginning in 2005 American Express ran a number of high profile advertisements using the slogan “My Life My Card” and featuring big name celebrities like Robert Deniro, Tiger Woods, and others.  The campaign was a big success.

As you might imagine, Goetz was not happy.  He sued for misappropriation and trademark infringement… and lost.

Why?  Because, the court found, he had no legal interest in the slogan.  Amex did not admit to taking the slogan from Goetz; rather, Amex claimed that it independently developed the idea only one week prior to receiving Goetz’s package in the mail.  Goetz of course did not believe it.  But whether or not we are inclined to share his belief that the timing was just a bit too “convenient,”  it did not matter either way to the court, which based its decision on the fact that Amex could not steal something from Goetz that Goetz did not own.

The court found that Goetz had no legal interest in the slogan, despite developing the idea, registering a domain name using the slogan, and applying for a federal trademark, because a trademark or service mark must be used to identify the source of goods or services.  The slogan was not intended to identify Goetz’s own marketing services, but rather, the hypothetical services of a credit card company.  Trademark rights do not arise in such ideas.  Trademark rights arise from the use of a mark in connection with goods or services in commerce.  Copyright, on the other hand, does protect original expression of ideas, but short phrases like slogans are typically considered to be insufficiently original to gain copyright protection.  Goetz’ idea was not a trade secret because he made no effort to keep it secret, and neither was it the proper substance of patent law.  So how could Goetz protect his idea?

Goetz’ main protection should have come from a contractual agreement, but because Goetz had no such agreement with American Express, Goetz had nothing.  American Express, by contrast, had great success.

When it comes to protecting the intangible assets of your business, the intellectual property attorneys at Briskin, Cross & Sanford can help you make sure that when you enter new relationships with business partners you retain the ability to protect your big idea, leverage your big idea, and make sure your big idea doesn’t go down in history as being someone else’s big idea.

Chocolate wars: the shape of things to come?

If claiming a trademark is all about protecting a brand, something that signifies the source or identity of your product in the marketplace, shouldn’t you be able to trademark a distinctive shape as much as you can trademark a distinctive name?

The answer is that you can.  In fact, you can trademark quite a variety of things that distinctively brand your product—a sound (the NBC chimes, for example); a color (the red soles on Christian Louboutin’s pumps so coveted by Sex in the City’s Carrie Bradshaw, not to mention Lady Gaga); a scent, a costume, a texture (more on these in future postings); and, not unsurprisingly, a shape.

Perhaps the most famous example of a distinctive shape is bottle designer Earl R. Dean’s 1915 design for what Coca Cola likes to call the “contour bottle,” known to some as the “hobble skirt” bottle (after the skirts of the early 1900s gathered below the knees and said to make wearers hobble).  Many Apple products certainly have a shape all their own—or is it?  Apple and Samsung have been slugging it out in court for years now over the shape of their overlapping products.  Apple claims that, in order not to infringe upon its iPad design, Samsung needs to make a tablet with a “cluttered appearance”: perhaps the issue is, as Thomas Baekdal cleverly put it in his 2011 baekdal.com article, “Apple never designed the iPad – they undesigned it.”

The latest round of the shape battles comes in Europe, where the United Kingdom’s Intellectual Property Office recently granted victory to Cadbury over Nestlé, ruling that Nestlé’s distinctive (ah, but now I am taking sides) four-fingered shape of the Kit Kat bar was actually, well, more functional than distinctive (give me a break!); and if a characteristic is predominantly functional, it cannot serve as a trademark (which is why Harley-Davidson eventually failed in its bid to trademark the sound of its motorcycle engines—“Harley-Davidson Quits Trying to Hog Sound,” the LA Times reported back in June, 2000).

Ironically, Nestlé had recently achieved exactly the opposite result in the European Union, where the board of appeal of the Community Trademark Office ruled in favor of Nestlé and dismissed Cadbury’s argument that the four-fingered shape did not distinguish Kit Kat from its rivals.  Funnily enough, the result is that Nestlé’s Kit Kat shape trademark is currently valid throughout the member states of the EU (which includes Britain) but invalid in Britain.  Of course, Nestlé can appeal the British decision and no doubt will (to the Easter Bunny perhaps?).

The Cadbury-Nestlé dispute is somewhat reminiscent of the Hershey case in the US, where in June, 2012, the Trademark Trial and Appeal Board finally permitted Hershey, over the objections of the Examining Attorney, to register its four-by-three, rectangular, recessed-panel-raised-border chocolate bar configuration, determining that it was finally more aesthetic than functional and had certainly acquired distinctiveness.  In the words of one reviewer of a brownie pan, the designer of which had shamelessly adopted the Hershey shape for its own product, the Hershey chocolate bar has become “a classic confectionary icon.”  (You can read the opinion of TTAB here).

Sweet!

$10 Well Spent

In 1986, the Port Authority of New York and New Jersey (“Port Authority”) sold the rights to use 3 little words to a Delaware non-profit organization.

The Port Authority has regretted that decision ever since.

Those “3 little words” are “World Trade Center,” and the Port Authority, along with thousands of other companies, now pays a pretty penny for the licensing rights to use “World Trade Center” in its merchandise and advertising. This right is especially important to the Port Authority’s current project: rebuilding the two (2) trade centers tragically destroyed 12 years ago today.

Should you be interested in joining the ranks and owning a license to “World Trade Center,” get ready to pay a bit more than $10.00. The World Trade Centers Association, the non-profit that owns the rights to “World Trade Center,” charges an initial $200,000.00 fee for the right to use these words, then charges an additional $10,000.00 fee every subsequent year for the continued use of the license.

And don’t think living outside of the United States means unlimited use of the words “World Trade Center” without these steep fees:  the World Trade Centers Association has trademarked “World Trade Center” in more than 100 countries.

So what is the lesson here? Never underestimate the value of $10.00 or the importance of a trademark.